On March 2, 2015, in a case of first impression before the Federal Circuit, the Court directly addressed “whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce under Lanham Act § 45, 15 U.S.C. § 1127.” The Court said no.

In 2008, David Couture filed a trademark application for PLAYDOM for writing and production services. As part of the use based application pursuant to Lanham Act. § 1(a), Couture submitted a screenshot of a web page bearing the trademark to the United States Patent and Trademark Office (USPTO) as proof of use of the mark in connection with the identified services. That page simply had the PLAYDOM name and stated “[w]e are proud to offer writing and production services for motion picture film, television, and new media.” The USPTO approved the application in 2009, but no services were actually provided until 2010.
One month after PLAYDOM’s application was approved, Playdom, Inc. (a different company) filed a trademark application for the identical trademark, PLAYDOM. The new application for PLAYDOM was refused based on the Couture application for PLAYDOM. In response to the refusal, Playdom sought cancellation of Couture’s now issued registration for PLAYDOM before the Trademark Trial and Appeal Board (“TTAB”). Despite Couture’s belief that the availability of the services was sufficient to support the claim of use, the TTAB granted the cancellation of the Couture registration stating that Couture “‘had not rendered his services as of the filing date of his application'” because he had “‘merely posted a website advertising his readiness, willingness and ability to render said services.'” (emphasis added) Accordingly, the original application was void ab initio. Couture appealed to the Federal Circuit, which upheld the decision of the TTAB.
In discussing its decision, the Federal Circuit noted that in its prior decision, Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed.Cir.2009), it stated that “[a]t the very least, in order for an applicant to meet the use requirement, there must be an open and notorious public offering of the services to those for whom the services are intended.” The Federal Circuit, however, went on to clarify that it did not suggest in Aycock that an open and notorious public offering alone is sufficient to establish use in commerce. Rather, the Federal Circuit stated that the “statute is clear that a mark for services is used in commerce only when both [1] ‘it is used or displayed in the sale or advertising of services and [2] the services are rendered.'” 15 U.S.C. § 1127 (emphasis added). Thus, in the Couture case, the mere advertising of a service “that the applicant intends to perform in the future will not support registration.”
The Couture decision emphasizes the importance of proper trademark use at the time of filing to support a resulting trademark registration. Since the Couture application was based on use, the trademark had to have been in acceptable use on the date the application was filed. If there is no use on the filing date of an application, the application can be filed based on an-intent to use the trademark, wherein once perfected, trademark rights are protected as of the filing date. As seen from this case, the consequences for failing to file the appropriate application can be catastrophic.
Anna Vradenburgh is a well-respected, business-minded expert in intellectual property issues. As a patent attorney licensed to practice before the United States Patent and Trademark Office, Anna assists clients in patent and trademark prosecution, and represents clients in trademark opposition matters, domain name dispute matters, and patent and trademark litigation. Anna can also assist your company in all manner of intellectual property protection. For more information, visit her website, or contact Anna at (818) 946-2300, or email her at anna@apogeelawgroup.com. This article is for educational purposes only and nothing in this article is intended to be, nor should be considered legal advice.

Trade dress is important area of intellectual property. Traditionally, trade dress is the overall appearance or image or design of a product or its packaging, which serves to signify the source of the product to the consumer. Although trade dress protection has extended beyond simple packaging and product design, it is not always clear what might constitute trade dress. One area of great importance to many businesses is whether there is protectable trade dress in their website.

In a recent case is the U.S. District Court for the Northern District of California, Ingrid & Isabel, LLC v. Baby Be Mine, addresses the increasingly relevant question of what constitutes protectable trade dress for a website. Although prior trade dress cases found that a website’s “look and feel” can constitute protectable trade dress, at least one case did so to protect the “look and feel” of a website that was, itself, the product, not merely one used to market products. In other cases, the court did not find trade dress due to the parties’ failure to specifically identify the elements of the website comprising the trade dress.

Generally speaking, trade dress refers to the elements that make up the visual appearance such that the purchasing public associates the trade dress with a single source for the goods. The courts have found protectable trade dress in the “look and feel” of everything from the color of pads used on dry cleaning equipment, to the colors and shape of a fast food restaurant. This case analyzes whether the “look and feel” of a website used to market products can constitute protectable trade dress.

In Ingrid & Isabel, LLC v. Baby Be Mine, both companies sell maternity waist bands (stretchy cotton belts that hold up the clothing for pregnant women) as well as other maternity clothing, and both companies operate a respective website. The parties were not new to litigation, and in fact Ingrid & Isabel had previously sued Baby Be Mine for patent infringement over its band design, trademark infringement based on allegations that Baby Be Mine’s “Belly Band” was confusingly similar to Ingrid & Isabel’s “Bella Band,” as well as for unfair competition. The present case alleges claims of breach of contract, and trade dress violations under the Lanham Act.

To prevail on a claim of trade dress, a party asserting trade dress must demonstrate that its trade dress is inherently distinctive; that its trade dress is non-functional; and that the defendant’s product creates a likelihood of consumer confusion.

In its Lanham Act claim, Ingrid & Isabel alleged that Baby Be Mine’s use of certain words and phrases on its website and marketing materials, and the overall “look and feel” of its website were distinctive and non-functional. Ingrid & Isabel recited specific elements contained on its website that it claims had been copied by Baby Be Mine, including cursive script used in the headers, the pale pink-orange color of the lettering, the poses of the models, photographs of models wearing white tanks with jeans, with long naturally wavy hair, where the model is featured head to mid-thigh, model photographs featuring mouse-over change of whimsical, casual poses to display all angles of the product, certain patterns on the website ‘wallpaper’ and other similarities. Ingrid & Isabel argued that the features on the Baby Be Mine site were similar enough to those specifically recited that it could lead to likelihood of confusion for consumers.

Regarding proof of its trade dress violation claim, Ingrid & Isabel offered evidence of direct copying, which courts have recognized as being relevant to a determination of secondary meaning. Further, the court recognized that many of the specific elements listed, such as the color and pattern of wallpaper, particular poses of the model, color of the script were non-functional elements. Finally, the court found that Ingrid & Isabel had created triable issues of fact with respect to the issue of likelihood of consumer confusion.

Because Ingrid & Isabel had created a triable issue of fact with respect to each element required to prove its trade dress violation claim, the court denied Baby Be Mine’s request for summary judgment. The survival of this claim provides the possibility for a finding that the “look and feel” of the Ingrid & Isabel website contains protectable trade dress. The outcome of this issue in the case may provide some guidance as to what may be required to claim trade dress in a website, and every company with a prominent web presence may be wise to pay attention to this case.

Trade dress rights are valuable intellectual property rights. If you have questions about trade dress issues, you need an experienced trademark attorney. Anna Vradenburgh is a well-respected, business-minded expert in trademark matters. For more information, visit her website, or contact Anna at (818) 488-8146. This article is for educational purposes only and nothing in this article is intended to be, or should be considered to be, legal advice.

The U.S. government has taken a number of steps to help stop counterfeit goods from entering the United States, including maintaining the website www.stopfakes.gov, a one-stop source for information on protecting your intellectual property from counterfeit imports. Stopfakes.gov is a partnership among a number of agencies including the FBI, U.S. Customs and Border Protection, the Department of Justice, Office of the U.S. Trade Representative, and United States Patent and Trademark Office (USPTO). The website has resources for businesses, including country-specific information about stopping fakes, and resources for reporting counterfeiting activities to federal law enforcement.

One of the best ways to prevent the sale of counterfeit goods is to keep them out of the United States. Under the federal Lanham Act and the Tariff Act of 1930, the federal government, through the U.S. Customs and Border Protection (USCBP) agency, has the responsibility of protecting trade and enforcing intellectual property rights on behalf of companies.

If you believe counterfeit goods bearing your federally registered trademark are being illegally imported into the United States, there are a few quick and easy ways to alert federal law enforcement.

Record your intellectual property rights with USCBP at http://www.stopfakes.gov/business-tools/us-customs-and-border-protection-e-recordation-tool. The website allows the submission of an application for online registration of federally registered trademarks and copyrights with the USCBP. This will typically include submitting descriptions and photographs of your goods, along with samples, or summaries of the content, appearance, and look of your products, such that USCBP will be able to recognize potential fakes. The application is $190 per trademark per class of goods, or copyright, with a periodic $80 renewal fee. (Currently, USCBP only provides for the recordation of trademarks and copyrights, not patents.) As soon as you have filed the application, USCBP will be authorized to detain, seize, notify, and destroy counterfeit versions of goods bearing your trademark, or copyrighted materials.

Authorize a reliable employee, agent, or attorney to serve as the point of communications for the USCBP. This individual will be the primary point of contact with the USCBP, and should have the skill and availability to definitively identify the counterfeit goods, in person, if necessary. This agent will receive all notices from USCBP, and should be able to respond quickly, investigate the seized goods, and notify the agency with certainty about the legitimacy of the goods.

If you have questions about importing, counterfeit concerns, or would like more information on customized services to monitor and protect your company’s intellectual property, you need an attorney who understands your needs and can help you protect your rights. Anna Vradenburgh is a well-respected, business-minded attorney with expertise in trademark issues and is able to advise your company on these types of intellectual property matters. For more information, visit the Eclipse Law Group website, or contact Anna at (818)488-8146. This newsletter is for educational purposes only and nothing in this newsletter is intended to be, or should be considered to be, legal advice.

In recent months, the U.S. Supreme Court has issued two opinions that clarify the scope of the Lanham Act. In March, the court ruled on Lexmark International v. Static Control Components, which addressed the issue of standing, including the issue of who could bring a claim, thereby clarifying the Lanham Act’s broad language which states that “any person who believes that he or she is or is likely to be damaged” by another person’s false advertising could bring a civil action. The high Court’s Lexmark ruling confirmed the right of one competitor to sue another competitor for “false or misleading” statements in advertising and labeling, and dismissed prior complex tests for proving standing to bring Lanham Act claims.In June, following Lexmark, the court ruled in Pom Wonderful v. Coca-Cola, that Lanham Act claims were not pre-empted by Food and Drug Administration (FDA) labeling regulations. In both of these cases, the court outlined the importance of the Lanham Act and the rights of competitors to use the Lanham Act to address false and misleading statements in both advertising and labeling on products, for the benefit of the consumer.

The Pom case is illustrative, in that it is a very simple example of a Lanham Act claim by a competitor. Pom sells pure pomegranate juice, which it claims has health benefits. Pom sued competitor Coca-Cola under the Lanham Act alleging that the label on one of its juice products misleads consumers into believing the product consists predominantly of pomegranate and blueberry juice as it prominently displays the wording “pomegranate blueberry”, when it in fact, the product contains only 0.3% pomegranate juice and 0.2% blueberry juice. In its opinion, the Supreme Court reviewed the intersection between two bodies of federal law-the Lanham Act, and the FDA’s labeling requirements. Coca-Cola claimed that Pom’s Lanham Act claims were barred because Congress intended the FDA labeling rules to govern product labeling issues. The high Court disagreed with Coca-Cola, ruling that Pom Wonderful may pursue claims under the Lanham Act against competitor Coca-Cola for alleged false claims on its product labels. (Ironically, Pom Wonderful is appealing a decision of the Federal Trade Commission that concluded Pom’s health claims on its products were deceptive.)

According to a Bloomberg article, “the ruling means that food labels will come under increasing scrutiny, and it’s possible many won’t fare well.”

While this is an important ruling for food manufacturers, the decision extends to all types of businesses. Indeed, the general issues of unfair competition, and false advertising create a potential Lanham Act claim for any operating business.

Your Business and the Lanham Act

Any business, regardless of whether it sells labeled products, should be aware that it, in addition to other regulations, may be subject to claims of unfair competition and/or false and deceptive advertising under the Lanham Act. Here are a few tips for consideration to help avoid such claims:

1. Review your product labels, website, advertising and other written materials. Ask whether your company’s product labels and advertising is accurate and truthful. Do they claim that your product or service does more than it really does? Could your claims be considered misleading to consumers? Could your product or service claims be confusing to the average customer or client? If so, maybe it is time for a re-write before you find yourself fending off claims by competitors.

2. Consider your competitors’ claims. Are your competitors claiming that their products can do more than they really do, in a way that is harming your business? Could competitor statements be misleading or confusing to consumers? If your competitors are making fraudulent or misleading claims, and those claims are harming your company’s bottom line, bringing a Lanham Act claim might be one way to fight back.

If you have questions about trademarks, or the Lanham Act, and the intersection between the Lanham Act and your intellectual property, you need an experienced trademark attorney. Anna Vradenburgh is a well-respected, business-mind expert in trademark issues with extensive experience prosecuting domestic and foreign trademarks. In addition to her prosecution practice, Anna also assists clients in the selection and use of trademarks and represents clients in trademark opposition matters, domain name dispute matters, and before the federal Trademark Trial and Appeals Board. Anna can also assist your company in licensing maters, including drafting and negotiation of trademark licensing agreements. For more information visit the Eclipse Law Group website, or contact Anna at (818) 488-8146.

Maine Springs LLC v. Nestlé Waters, U.S. District Court for District of Maine, 2:14-cv-00321 (2014), Filed August 11, 2014

One Maine water bottler is thirsty for justice in a federal unfair competition dispute. Maine Springs LLC, a local water company in Maine, has filed a suit against Nestlé Waters NA in U.S. District Court for the District of Maine alleging false and misleading advertising, and tortious interference with business. More specifically, Maine Springs alleges that labels on Nestlé’s bottled water products bearing the Poland Spring® mark contain false and/or misleading statements as to the sources of the water in violation of the federal Lanham Act, and that because of its assertion of its trademark rights in the Poland Spring® mark against Maine Springs, Nestlé has effectively interfered with Maine Springs’s attempts to sell its bulk water to other third party bottling companies.

This suit is one of the first to follow a recent ruling from the U.S. Supreme Court in a similar labeling dispute between Coca-Cola and Pom Wonderful, LLC (discussed in more detail below). In that case, the Supreme Court ruled that a Lanham Act claim could be brought against a competitor challenging the competitor’s food and beverage label, even though the food and beverage label was subject to Food and Drug Administration labeling regulations.

The dispute between Maine Springs and Nestlé arises from Maine Springs allegations that the Poland Spring, a natural water source in Maine, has not been in use for more than 30 years, and thus, accordingly the complaint, was not in use in 1994, when Nestlé began bottling and selling water under the Poland Spring® brand. Thus, any statements made by Nestlé that the water is sourced from the Poland Spring are false and misleading. Further, according to the complaint, Nestlé’s label indicates that the water is 100% spring water. Maine Springs contends that this too is false, and states that Nestlé utilizes water from other springs and non-spring water sources, from other places in the region.

According to Nestlé, the Poland Spring® brand is famous and has been marketed for decades. Indeed, Nestlé owns numerous U.S. federal trademark registrations that include the words POLAND SPRING for spring water. Based on its rights in these registrations, Nestlé sent Maine Springs a cease and desist letter threatening litigation in response to Maine Springs’ attempt to bottle and market a bottled water product after securing permits to extract water from underground spring water sources in Maine, wherein the label on the bottled water product identified the source of the water as Poland Spring, Maine. Nestlé contended that this would create confusion with Nestlé’s Poland Spring® bottled water product.

Further, Maine Springs was in the process of securing contracts to sell bulk water to other small and mid-sized bottlers, including Niagara Bottling Company, and Crystal Rock. Maine Springs alleges that because of a cease and desist letter from Nestlé threatening trademark infringement against Maine Springs for labeling that indicated that the water source was Poland Spring, its potential business partners rejected Maine Springs’ proposals for fear of threatened litigation by Nestlé. Although there are no allegations that Nestlé ever directly contacted any of the bottlers, Maine Springs alleges that Nestlé’s actions constituted tortious interference with prospective business advantage.

This is the third lawsuit that Nestlé has defended regarding the label on its bottled water. The company settled two prior consumer class action suits for fraud in Illinois and Connecticut, by parties who claimed that Nestlé used municipal water to fill its bottles, despite product labels that represented the product was 100% natural spring water.

Whether Nestlé’s statements on the labels are false and misleading remains to be seen, as does whether threatening litigation against Maine Springs constitutes tortious interference of business with parties in negotiation with Maine Springs. However, based on its registrations, Nestlé has the right to object to product labels that attempt to utilize its brand Poland Spring® as a source identifier of the product. Competitors, however, are entitled to identify the geographic location Poland Spring. Thus, the resolution of this issue will likely depend upon the manner in which the identification of the geographic location, Poland Spring, is presented on the label, as it is not likely that Nestlé’s registration rights will allow them the ability to prevent truthful statements regarding the geographic location of the water being sold to be included on the product.

If you have questions about trademarks, or have received a cease and desist letter from a competitor, you need an experienced trademark attorney. Anna Vradenburgh is a well-respected, business-mind expert in trademark issues with extensive experience prosecuting domestic and foreign trademarks. In addition to her prosecution practice, Anna also assists clients in the selection and use of trademarks and represents clients in trademark opposition matters, domain name dispute matters, and before the federal Trademark Trial and Appeals Board. Anna can also assist your company in licensing maters, including drafting and negotiation of trademark licensing agreements. For more information visit the Eclipse Law Group website, or contact Anna at (818) 488-8146.